EXPANDING THE EUROPEAN PATENT OFFICE’S PPH NETWORK

On 6 January 2015, new bilateral PCT-PPH pilot programs started between the European Patent Office (EPO) and

the Canadian Intellectual Property Office,

the Israel Patent Office,

the Mexican Institute of Industrial Property and

the Intellectual Property Office of Singapore.

Under these programs, examination may be accelerated before the EPO on the basis of:

a PCT application for which a favorable written opinion or international preliminary report on patentability (IPRP) was issued by the Patent Office of Canada or Israel in its capacity as ISA/IPEA; or

a national work product established by one of the four Partner Offices during the processing of a national application or a PCT application having entered the national phase.

The programs also allow acceleration of patent applications pending before one of the four Partner Offices on the basis of a PCT application for which a favorable written opinion or IPRP was issued by the EPO or on the basis of a national work product issued for an EP application or a PCT application having entered regional phase before the EPO.

To be eligible to participate in the PPH at the EPO, the following requirements have to be met:

the EP application must have the same earliest priority or filing date than the corresponding application;

the corresponding application must have at least one claim considered as patentable/allowable;

the claims of the EP application must sufficiently correspond to the patentable/allowable claims of the corresponding application; and

the substantive examination of the EP application must not have begun.

Formal requirements at the EPO may include the provision of the relevant documents of the examination proceedings regarding the corresponding application, eventually along with a translation into one of the EPO official languages French, German or English.

PPH still appears to be of limited interest in proceedings before the EPO, since acceleration is also available under PACE upon simple request. However, the new pilot programs open interesting new possibilities of obtaining a quick grant by the Partner Offices after receiving a favorable opinion by the EPO.